Free Motion for Extension of Time - District Court of Delaware - Delaware

Case 1:07-cv-00769-JJF

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE JOHNSONFOILS, INC. Plaintiff, v. VOITH PAPER GMBH & CO. KG Defendant. : : : : : : : : : Civil Action No. 07-769-JJF

PLAINTIFF, JOHNSONFOILS, INC.'S COMBINED MOTION AND MEMORANDUM OF LAW FOR SETTING THE TIME PERIOD FOR FOREIGN SERVICE OF PROCESS Plaintiff, JohnsonFoils, Inc. ("JohnsonFoils") recognizes that there is no set time period for serving a foreign defendant; however, JohnsonFoils understands that it must be done timely. Accordingly, JohnsonFoils moves this Honorable Court for an Order setting a reasonable time period for service of the Complaint following this Court's issuance of an order on JohnsonFoils' Motion for Leave to Amend its Counterclaims (D.I. No. 54 in the related Civil Action No. 07-226). JohnsonFoils' request is necessitated by the refusal of Voith Paper GmbH & Co. KG ("Voith"), the named plaintiff in the related Civil Action No. 07-226, ("Voith") to accept service. Voith is demanding service pursuant to the Hague Convention on Service Abroad of Judicial and Extrajudicial Documents ("Hague Convention"), despite having previously filed Civil Action No. 07-226 in this District which concerns the same parties and family of patents.

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I.

STATEMENT OF FACTS On April 20, 2007, Voith alleged in Civil Action No. 07-226 that JohnsonFoils

infringed Voith's U.S. Patent Nos. 5,718,805 (" '805 Patent" ) and 5,972,168 (" '168 Patent"). On August 13, 2007, JohnsonFoils' filed its Answer in Civil Action No. 07-226 asserting several affirmative defenses and counterclaims, including a request for declaratory judgment holding the patents-in-suit invalid and not infringed. On August 24, 2007, JohnsonFoils requested reexamination of the `805 and `168 Patents, and on November 16, 2007, JohnsonFoils requested reexamination of Voith's U.S. Patent Nos. 5,389,206; 5,000,091; and 5,853,544 which are of the same patent family as the `805 and `168 Patents and are owned by Voith. On November 27, 2007, JohnsonFoils filed the instant Complaint ("this Action") seeking a declaratory judgment that the three (3) Voith patents not asserted in Civil Action No. 07-226 were not valid or infringed; however, Voith refused to allow its counsel in Civil Action No. 07-226 to accept service in this Action. On December 21, 2007, JohnsonFoils filed a Motion for Leave to Amend its Counterclaims (D.I. No. 54 in Civil Action No. 07-226) to assert non-infringement and invalidity of Voith's three (3) additional patents. JohnsonFoils stated in its motion that "JohnsonFoils filed the declaratory judgment action with the expectation that the action would be joined with the case and that the matters would be consolidated," and "[i]f the instant motion is granted, JohnsonFoils plans

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to dismiss the related action." See JohnsonFoils Motion for Leave to Amend its Counterclaims at p. 6, n. 2; p. 7, n. 3. The Court has not yet ruled on this motion. II. ARGUMENT Fed.R.Civ.P. 4(f) provides that service of process upon an individual in a foreign country may take place "by any internationally agreed means of service that is reasonably calculated to give notice, such as those authorized by the Hague Convention on the Service Abroad of Judicial and Extrajudicial documents." Fed.R.Civ.P. 4(h)(2) makes this provision applicable to corporations outside of the United States. Fed.R.Civ.P. 4(m) sets the time limit for Service of Process to take place in federal civil actions at one-hundred and twenty (120) days from the filing of a complaint. The one-hundred and twenty (120) days time limit of Rule 4(m) does not apply to foreign service of process under Fed.R.Civ.P. 4(f). The Hague Convention sets no specific time limit for service of process following the filing of a complaint. Courts within the Third Circuit have held that no such time limit exists, and that the one-hundred and twenty (120) day time limit should not be applied where service is to take place under the Hague Convention. See Mitchell v. Theriault, 516 F.Supp. 2d 450 (M.D.Pa. 2007); Lewis v. Vollmer of America, 2007 U.S. Dist. LEXIS 38317 (W.D.Pa. 2007); In Re Bulk Graphite Products Antitrust Litigation, 2006 U.S. Dist. LEXIS 45762 (D.N.J. 2006). However, a plaintiff must act with diligence to execute service within a reasonable time period to be effective under the Hague Convention and failure to do so may warrant dismissal of the action. See Id. at 13; see also Resource Trade Finance, Inc.

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v. PMI Alloys, 2002 U.S. Dist. LEXIS 14740, 10 (S.D.N.Y.). In cases where the sufficiency of service of process under the Hague Convention is at issue, courts may issue an order setting a reasonable time period for service of process to take place. See Mitchell at 458. JohnsonFoils intends to dismiss this Action if leave to amend is granted in Civil Action No. 07-226. Thus, it is in the interest of judicial economy to set an extended time period so that this Action will only proceed if this Court does not permit JohnsonFoils to assert its additional counterclaims in Civil Action No. 07226. III. REQUEST FOR RELIEF JohnsonFoils respectfully requests an order setting a reasonable time period for service in this Action following issuance of this Court's order on JohnsonFoils' Motion for Leave to Amend its Counterclaims filed in the related Civil Action No. 07-226. Respectfully submitted, Seitz, Van Ogtrop & Green, P.A. Dated: March 26, 2008 /s/ Patricia P. McGonigle _________________________________ George H. Seitz, III (DE #667) [email protected] Patricia Pyles McGonigle (DE #3126) [email protected] Kevin A. Guerke (DE#4096) [email protected] 222 Delaware Avenue, Suite 1500 P.O. Box 68 Wilmington, DE 19899 (302) 888-0600 -and-

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Anthony S. Volpe John J. O'Malley Ryan W. O'Donnell Volpe and Koenig, P.C. United Plaza, Suite 1600 30 South 17th Street Philadelphia, PA 19103 (215) 568-6400

Attorneys for Plaintiff JohnsonFoils, Inc.

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IN THE UNITED STATES DISTRICT COURT FOR THE DISTRICT OF DELAWARE JOHNSONFOILS, INC. Plaintiff, v. VOITH PAPER GMBH & CO. KG Defendant. : : Civil Action No. 07-769-JJF : : : : : : :

NOTICE OF MOTION TO: All Parties and Counsel Appearing on the Attached Certificate of Service PLEASE TAKE NOTICE that JohnsonFoils, Inc. seeks to present its

Motion for Setting the Time Period for Foreign Service of Process to the Court
on Friday, May 9, 2008 at 10:00 a.m. Dated: March 26, 2008 Respectfully submitted, Seitz, Van Ogtrop & Green, P.A. /s/ Patricia P. McGonigle ______________________________ George H. Seitz, III (DE667) [email protected] Patricia P. McGonigle (DE3126) [email protected] Kevin A. Guerke (DE4096) [email protected] 222 Delaware Avenue, Suite 1500 P.O. Box 68 Wilmington, DE 19899 (302) 888-0600 - and -

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Anthony S. Volpe John J. O'Malley Ryan W. O'Donnell Volpe and Koenig, P.C. United Plaza, Suite 1600 30 South 17th Street Philadelphia, PA 19103 (215) 568-6400

Attorneys for JohnsonFoils, Inc.

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CERTIFICATE OF SERVICE I, Patricia P. McGonigle, Esquire, hereby certify that on this 26th day of March 2008, I electronically filed the foregoing pleading with the Clerk of Court using CM/ECF which will send notification of such filing to counsel of record. Further, I caused a copy of the foregoing pleading to be served upon the following persons in the manner so notedP:

Via Federal Express Voith Paper GMBH & Co. KG Sankt Poeltener Strasse 43 Heidenheim, Germany 89522

Via Hand Delivery Adam W. Poff, Esquire Young, Conaway, Stargatt & Taylor, LLP 1000 West Street, 17th Floor P. O. Box 391 Wilmington, DE 19899

Via Federal Express Neil F. Greenblum, Esquire Neal Goldberg, Esquire Michael J. Fink, Esquire Greenblum & Bernstein, PLC 1950 Roland Clarke Place Reston, Virginia 20191

/s/ Patricia P. McGonigle _________________________________ Patricia P. McGonigle (ID No. 3126) [email protected]

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